Ex Parte Deolalikar

Patent Trial and Appeal Board

Jan 30, 2014

11879992 (P.T.A.B. Jan. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte VINAY DEOLALIKAR1
__________

Appeal 2011-009116
Application 11/879,992
Technology Center 2100
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of determining the documents from which a particular document was
derived. The claims have been rejected for anticipation. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies the Real Party in Interest as Hewlett-Packard
Development Company, L.P. (App. Br. 1).
Appeal 2011-009116
Application 11/879,992

2
STATEMENT OF THE CASE
Claims 1-20 are on appeal. Claim 1 is illustrative and reads as follows
(emphasis added):
1. A method of determining a subset of documents from which a
particular document was derived, the method comprising:
receiving similarity measurements indicating similarities between
contents of documents; and
determining the subset of the documents that the particular document
was derived from based on dates the documents were created and the
similarity measurements without requiring document tracking information to
be associated with the documents to determine the subset.

Similarly, claims 8 and 15, the other independent claims, recite “using
dates the documents were created and the similarity measurements to
determine a subset of the documents that a particular document was derived
from” (claim 8) or “using the similarity measurements to determine a subset
of the documents that a particular document was derived from” (claim 15).
The Examiner has rejected claims 1, 2, 8, 15, 16, and 20 under
35 U.S.C. § 102(b) as anticipated by Doerre2 (Ans. 3). The Examiner has
also rejected the remaining claims under 35 U.S.C. § 103(a) as obvious:
claims 3-6, 9, 10, 17, and 18 based on Doerre and Hill3 (id. at 6) and claims
7, 11-14, and 19 based on Doerre, Hill, and Farahat4 (id. at 12). The same
issue is dispositive for all of the rejections.
The Examiner finds that Doerre discloses a method meeting all of the
limitations of claim 1. In particular, the Examiner finds that Doerre

2 Doerre et al., US 6,446,061 B1, issued Sept. 3, 2002.
3 Hill et al., US 5,808,615, issued Sept. 15, 1998.
4 Farahat et al., US 7,188,117 B2, issued Mar. 6, 2007.
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Application 11/879,992

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discloses determining the documents from which a particular document was
derived in its description at columns 7 and 17 that “similarity measurements
[are] computed based on the dates associated with a particular document”
(Ans. 4).
Appellant argues that “‘generating a content taxonomy of a multitude
of documents (210) stored on a computer system,’ as disclosed by Doerre, is
not analogous to, and thus does not anticipate, ‘determining the subset of the
documents that the particular document was derived from . . . ,’ as claimed”
(App. Br. 10-11).
We agree with Appellant that the Examiner has not shown that Doerre
discloses a method that includes a step of determining the documents that a
particular document was derived from, as claimed. Doerre discloses a
“method of generating a content taxonomy of a multitude of documents [ ]
stored on a computer system” (Doerre, col. 4, ll. 31-34). The method
includes selecting a subset of the documents and generating a taxonomy for
the subset of documents (id. at col. 4, ll. 35-38).
Doerre discloses that the subset of documents can be determined by
random selection (id. at col. 7, ll. 10-11), and that advantageously “the range
of the document dates is divided in equally sized sub-ranges and said
random selection is performed separately for documents with document
dates from said sub-ranges” (id. at col. 7, ll. 17-20). Specifically, this
approach “guarantees that changes of the terms used within the documents
(‘evolution of terminology’), which occur over time, are fully reflected in
the generated taxonomy” (id. at col. 7, ll. 21-24). Column 17 of Doerre
likewise describes selecting a subset of documents by random selection,
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Application 11/879,992

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which can be “performed based on documents [of] similar size or similar
date” (id. at col. 17, ll. 20-21).
Thus, although the Examiner correctly found that Doerre discloses
receiving similarity measurements indicating similarity of documents, he has
not identified any disclosure in Doerre of determining the documents from
which a particular document was derived, as required by the claims on
appeal. Because Doerre does not identically disclose the claimed invention,
we are constrained to reverse the rejection of claims 1, 2, 8, 15, 16, and 20 as
anticipated by Doerre.
The rejections based on 35 U.S.C. § 103(a) each relies on the
Examiner’s finding that Doerre identically discloses the invention of
independent claims 1, 8, and 15 (Ans. 6-18). Because that finding is not
supported by the evidence, we must also reverse the rejection of claims 3-6,
9, 10, 17, and 18 as obvious based on Doerre and Hill, and the rejection of
claims 7, 11-14, and 19 as obvious based on Doerre, Hill, and Farahat.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

cdc